Navajo Nation v. Urban Outfitters, Inc., No. Civ. 12—195 LH/WDS, 2013 WL 258414 (D.N.M. Jan. 16, 2013)

In a ruling by the District Court of New Mexico earlier this month, The Navajo Nation (“the Nation”) defeated Urban Outfitters’ (“UO”) motion to transfer venue.

The Nation brought suit against UO for trademark infringement after UO allegedly sold apparel, jewelry, and other goods bearing the Nation’s incontestable NAVAJO mark. Things started off on a positive note and appeared as though they might be resolved amicably after UO immediately acted to comply with the Nation’s demands that UO cease and desist sales of any goods bearing the mark. Things soured, however, prompting the Nation to file suit in February of last year.

After complaints, motions to dismiss, and threatened injunctions, UO moved to transfer venue to Pennsylvania. Part of the analysis in determining whether to grant a movant’s transfer of venue is to look at the plaintiff’s relationship to the forum. This forced the court to analyze, for the first time, what a Native American Tribe’s “home-forum” should be when its sovereign territory spans three states. The court gingerly dodged the question, however, by deciding that even if New Mexico is not the Nation’s “home-forum”, it still has a strong enough presence in New Mexico to presume that litigating there is convenient for the Nation.

Then, the court had to balance the convenience of the Nation in keeping the action in New Mexico with the inconvenience it would be for UO. The court was not persuaded by UO’s reasons for inconvenience. First, the court found that since UO sells products nationwide it had a presence in New Mexico. This meant that since some infringing sales were made in New Mexico, regardless of where the infringement originated, it is sufficient to call the forum the locus of operative facts sufficient for keeping the suit there. Second it found that while it may be inconvenient for UO’s employees to travel to New Mexico to act as witnesses in the suit, there employee status meant that UO could compel them to go. Moreover, UO presented no evidence that actual travel to New Mexico would be necessary since deposition testimony would likely be sufficient. This same reasoning defeated UO’s arguments that other third-party witnesses that UO could not compel to appear would be inconvenienced. UO also failed to show that any of these purported witnesses would refuse to appear in the first place.

Finally, before finding most other factors that usually go into a venue transfer analysis to be irrelevant or neutral, the court found that the financial realities of the parties indicated that UO’s litigating in New Mexico would be less inconvenient to it than would be forcing the Nation to litigate in Pennsylvania.